On September 14, in SawStop Holding LLC v. Vidal, the Federal Circuit held that the owner of two patents was not entitled to patent term adjustment (PTA) based on delays associated with appeals of the USPTO’s initial determinations of unpatentability. This case offers guidance on the applicability of so-called “C delay” term adjustment in determining whether the term of a patent should be increased after appeal from a final rejection.
SawStop is the owner of two patents, U.S. 9,522,476 and 9,927,796, that are directed to saws with safety features. During prosecution of the ’476 patent, SawStop appealed the final rejection of a claim. On appeal, the Patent Trial and Appeal Board (PTAB) found the examiner’s basis for rejection was improper, but applied a new ground of rejection and ultimately affirmed the rejection of the claim. After subsequent amendments to the claim, SawStop succeeded in overcoming the new ground of rejection and obtained the ’476 patent.
During prosecution of the ’796 patent, SawStop appealed the final rejection of a claim that stood rejected on both anticipation and obviousness-type double patenting grounds. SawStop’s appeal led to the filing of a complaint in district court, where SawStop challenged the anticipation rejection but did not challenge the double patenting rejection. The district court reversed the anticipation rejection, leaving in place the unchallenged double patenting rejection. In subsequent prosecution, SawStop overcame the double patenting rejection and obtained the ’796 patent.
With patents in hand, SawStop sought PTA under 35 U.S.C. § 154(b)(1)(C) based on the delays associated with the appeals. PTA under subsection C is available for delay due to appellate review where “the patent was issued under a decision in the review reversing an adverse determination of patentability.” The USPTO denied SawStop’s requested PTA for “C delay” for each patent, and a district court affirmed the denials.
On appeal, the Federal Circuit explained that the “unambiguous language” of subsection C “imposes two requirements: that an adverse determination of patentability be reversed, and that the application reviewed in that appeal issue as a patent as a result of that reversal.”
Regarding the ’476 patent, the Federal Circuit noted that, even though the PTAB entered a new ground of rejection on appeal, “the adverse determination of unpatentability remained before and after the appeal to the Board.” The court explained that the reversal of a “determination of patentability” requires a determination that the claim in question is substantively allowable, not just free of a particular rejection. The court further observed that the ’476 patent issued “only after significant substantive post-appeal prosecution and amendment.” Therefore, the ’476 patent did not “issue under a decision in the review reversing an adverse determination of patentability,” as required by subsection C, and was not entitled to “C delay” PTA.
Regarding the ’796 patent, the Federal Circuit explained that the claim at issue was “unpatentable both before the appeal (because of anticipation and double patenting) and after the appeal (because of double patenting).” As with the ’496 patent, “the appellate decision did not reverse an adverse determination of patentability.”
The SawStop decision provides further guidance regarding the availability of PTA under subsection C to patentees who obtain a patent after appellate review. The decision may also be a cautionary tale for patent applicants during the appeal stage of a patent application. Applicants who may seek to eventually pursue PTA under subsection C may consider taking steps to reverse all grounds of unpatentability on appeal.